Patentability Searches a.k.a. Dream Crushers
By: Luke Barbin, CEO
When I began the practice of law in the good ole days, I remember sitting in client meetings with my first boss, a very experienced patent attorney and former patent examiner. He had worked in patent prosecution over twenty years. When independent inventors would come in for their first consult, I’d see the excitement build on their face as they prepared to share their “new” invention with us. Then my boss would begin bluntly with some background advice, in particular, that “...everything is known.” You would see the dismay on the inventor’s face as their excitement melted to anxiety, albeit temporarily, until he followed with “…but if your invention represents known ideas that, when combined, represent a new, useful, and non-obvious apparatus, system, or method, it may be patentable." At this point, the inventor pepped up a bit as the consult proceeded.
Now, after years spent in practice and in IP research, I couldn’t agree more with this blunt approach. To my former boss’ credit, he was zealously advocating for his clients. There are very few inventions that we research where the elements of the invention aren’t demonstrably known through publication in the literature, patent or otherwise.
Sometimes the entire combination of elements not only already exists but has been written about extensively and in more detail than the present independent inventor has even contemplated. In other cases, the elements are readily available in the art, but it is nearly impossible to find them together and combined for the purpose that the inventor envisions. Very rarely are the elements so new that you can’t locate publications related to them.
As we begin patentability studies, we are keenly aware that if we succeed at our job, we will prove that the subject invention has already been previously invented. Great news if we knock a search out of the park because we found what we were paid to look for. Bad news for the inventor if we succeed, right?
This juxtaposition between our research success and our client’s failure has led to a phrase around the office we lovingly use…“dream crusher”. When our teams find home run references in patentability studies, we playfully compliment the lucky researcher/s by chiding them with phrases like, for example, “way to go you dream crusher!”
Now, on its face, it seems like dream crushing is bad news for the inventor. However, the results of dream crushing aren’t just bruised egos. They can be a step in a positive direction for an inventor. Unfavorable results provide them with feedback to further invent, improve, and ideate their invention to advance it to not only something that may be patentable (new, useful, and non-obvious) but something that may be more commercially differentiated and successful.
Additionally, financial outcomes in patent prosecution are much better if well researched, well-improved, and well-understood inventions are the ones pursued at the patent office. No one wants an applicant to be $15-$20k or more into patent prosecution when prior art is found.
So, if dream crushing is actually a positive outcome for an inventor (as most patent attorneys know), maybe we at Techson IP need a better moniker to bestow on our patentability researchers. How about… “nightmare crushers”?
Come back to us with your good dream, and we will be more than happy to frustratingly fail at finding prior art for you. We will then celebrate our failure and your success.